http://ipkitten.blogspot.com/2025/02/gti-v-gta-too-short-to-be-confusingly.html
The scope of protection of short marks is often considered to be narrower than for longer marks. Consumers are deemed to remember short signs more easily and perceive differences more readily. This is why a difference in one letter can be sufficient to exclude a likelihood of confusion. However, simply changing one letter of a short mark may not be a free pass, as a recent decision of the German Patent Court involving the trade marks ‘GTI’ and ‘GTA’ shows.
Background
In 2015, an individual person filed for registration of German word mark GTA. The application covered, inter alia, the following goods:
Class 9: Buses [line systems for exchanging data between more than two participants] as far as included in class 9; electronic chips for engine control; electronic control devices; programs for data processing for controlling vehicle technology.
Class 12: Vehicles; parts and accessories for vehicles.
Volkswagen filed an opposition on the basis of its German trade mark GTI, which was registered in 1995 for ‘motor vehicles and their parts; motor vehicle engines’ in class 12.
The German Patent and Trade Mark Office partially upheld the opposition for the goods in classes 9 and 12 of the contested trade mark. The applicant appealed.
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The German Patent Court’s decision
The German Patent Court upheld the appeal for the goods in class 9 but confirmed the first instance decision with respect to the goods in class 12 (28 W (pat) 44/18).
1. Non-use defence
The applicant requested Volkswagen to prove use of its ‘GTI’ trade mark. Volkswagen submitted evidence showing that ‘GTI’ was used as a trim level designation.
The applicant argued that ‘GTI’ was descriptive for ‘gran turismo injection’. To that effect, he referred to the General Court’s judgment in case T-63/09, where a likelihood of confusion between ‘GTI’ and ‘SWIFT GTi’ was rejected, largely because the term ‘GTI’ was deemed to be descriptive.
While the Court agreed that the abbreviation is used in the automotive industry to designate cars with a sporty character, the judges seemed to be of the opinion that consumers would nevertheless understand ‘GTI’ as an indication of the commercial origin because of Volkswagen’s specific use of it.
The use in combination with the model designations ‘Golf’ and ‘Polo’ was deemed not to alter the distinctive character of the sign. Consumers are aware of the use of several separate brands on cars, namely the manufacturer brand (Volkswagen, VW), the model name (Golf, Polo) and the trim level designation (GTI). Consumers would, therefore, understand ‘GTI’ as an independent brand. The judges found that the trim level name designates a particular manufacturer’s car with certain features but not merely the features themselves.
Therefore, the Court accepted genuine use for ‘vehicles’.
2. Distinctiveness of GTI
The judges held that the abbreviation ‘GTI’ has an inherently below-average degree of distinctiveness because it can refer to a vehicle with an injection engine and its particularly powerful, sporty equipment.
Due to Volkswagen’s intensive and long-standing use, the Court deemed the distinctiveness to be average overall.
3. Identity/similarity of the good and services
The goods ‘vehicles; parts and accessories for vehicles’ of the contested trade mark were deemed identical or highly similar to ‘vehicles’, for which genuine use was proven.
However, the goods in class 9 of the contested trade mark were considered to be similar to a low degree to ‘vehicles’ at best. A car consists of various different parts and consumers would be aware that products such as those of the contested application are usually produced by automotive suppliers but not by the car manufacturer. Further, the materials, sales channels and the relevant public were deemed to be different.
The fact that the class 9 goods are installed in the complex product ‘vehicle’ by the car manufacturer and are, therefore, functionally coordinated with the vehicle, was on its own not deemed sufficient to establish a similarity between them. Rather, a close connection would be required in the sense that one good is indispensable or important for the use of the other, so that the assumption of common or at least connected places of origin is obvious.
Nevertheless, the judges found that the functional relationship between ‘vehicles’ and the goods in class 9 of the contested trade mark results in a low degree of similarity.
4. Similarity of the signs
The Court found the signs to be aurally similar to an average degree. Two thirds of the signs are identical. This relates to the beginning of the signs, to which consumers pay more attention.
The fact that both marks are short was deemed irrelevant. Even though consumers perceive differences between short marks more easily than in longer marks, the legal standards applied to short marks do not differ from other types of marks. The relevant public must be able to differentiate the signs.
Since the different endings could be overheard easily, especially when considering that the signs can be spoken fast and not clearly, the judges concluded that the signs have an average degree of phonetic similarity. As is common under German practice, the Court did not assess the visual and conceptual similarity.
5. Likelihood of confusion
Despite the high level of attention of the relevant public when purchasing a car, consumers would not be able to safely distinguish the signs for identical and highly similar goods considering the average degree of inherent distinctiveness. For all other goods, a likelihood of confusion was denied.
Volkswagen’s argument of a series of marks was rejected. They relied on the longstanding use of ‘GTI’, ‘GTE’ and ‘GTD’. The Court held that the term ‘GT’ was descriptive for ‘Gran Turismo’. According to settled case law, descriptive elements cannot form the common component of a series of marks.
6. No reputation of ‘GTI’
Volkswagen also relied on a trade mark with a reputation. The judges, however, held that ‘GTI’ is not sufficiently known. Competitors have been using this abbreviation for sporty car models. A consumer survey would have been necessary to establish a reputation in these circumstances but was not submitted.
Comment
The decision’s reasoning is not straightforward. If the court acknowledged that the term ‘GT’ is descriptive and cannot form the basis of a series of marks, should the same reasoning not also be applied to the assessment of the likelihood of confusion? After all, the only common letters of the marks ‘GTI’ and ‘GTA’ are the (descriptive) letters ‘GT’. A similarity in common elements that are descriptive does, according to consistent case law, not often lead to a likelihood of confusion.
The picture is by Ezgi Gözütok and used under the licensing terms of Pexels.com.
Foto von Ezgi Gözütok: https://www.pexels.com/de-de/foto/graffiti-auto-haustiere-reflektierung-20654442/
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